Dex Media, Inc. v. Click-To-Call

Whether the American Invents Act, 35 U.S.C. § 314(d), permits appeal of the PTAB’s decision to institute an inter partes review upon finding that the Act's § 315(b) time bar did not apply.

Infrorocket.com, Inc., filed a suit challenging a patent owned by Keen, Inc. Keen then merged with Infrorocket and voluntarily dismissed the action.  Petitioner filed suit against Respondent, who acquired the patent, alleging infringement. Respondent believed “inter partes review” (IPR) was time-barred under the American Invents Act, 35 U.S.C. § 315(b), because Petitioner had been served the complaint from the previous action more than one year prior. The Patent Trial and Appeal Board (PTAB) rejected the argument, holding the Federal Circuit treat voluntary dismissals as though the action was never brought. PTAB denied Respondent’s request for rehearing and the Federal Circuit dismissed Respondent’s appeal. Respondent appealed to the Supreme Court, which vacated and remanded for consideration due to the decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016). The Federal Circuit dismissed, relying on Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016), essentially holding that the presumption that Congress intends judicial review of an agency decision is insurmountable. Petitioner argues that the court’s narrow reading of § 315(b) directly contravenes the decision in Cuozzo, in which the Supreme Court held a specific agency decision to be unreviewable. Petitioner also argues that Congress intended IPR’s to improve efficiency of patent appeals and that the decision directly hinders this goal by allowing appeals of preliminary decisions to institute IPR’s.